concurring in part and dissenting in part.
I concur in the decision to remand the case to the U.S. International Trade Commission (Commission), but I respectfully decline to join certain portions of the majority opinion, as set forth below.
I concur in the result reached by the majority that only the ’762 patent is before the court in this appeal in that the ’926 and ’335 patents are not appealable by SSIH at this time. I also agree that claim 12 of the ’762 patent is valid, although I feel that the majority unduly limits the scope of claim 12. I respectfully dissent, however, from the majority’s conclusion that claim 10 of the ’762 patent is invalid. I feel that the court has failed to consider an important question of claim interpretation posed by several precedents of the U.S. Court of Claims.
I.
I agree that the issue of the collateral estoppel effect, if any, of the district court judgment of invalidity in the Pontiac case should be reserved. Collateral estoppel is an affirmative defense1 and for that and other reasons simply is not an issue in this case. The Commission could, and apparent*384ly did, consider the uncertainty generated by the Pontiac judgment in crafting its remedial order.
II.
THE ’762 PATENT
With respect to the validity of claim 12 of the ’762 patent, Í concur in the result reached by the majority. I am unable, however, to join the majority’s conclusion that claim 10 is anticipated by Harnden under 35 U.S.C. § 102(e) (1976). My review of claim 10 has revealed a potential problem of claim interpretation with respect to the precedents of the former U.S. Court of Claims, binding on this court under South Corp. v. United States,2 which compels me to dissent.
A.
I agree with the majority that claim 12 is valid. The majority’s reasoning, however, appears unnecessarily to limit the scope of that claim. The reference Rajchman lacks a memory system as is called for in claim 12 and is, instead, supplied with input data through a photoelectric scanning circuit rather than from a memory. That difference alone is sufficient to ground the conclusion of validity over the reference. Yet, the majority proceeds to read into claim 12 the additional limitation of randomly accessing the display. While claim 12 clearly provides a system capable of random access display operation, the invention set forth in claim 12 is not so limited. Claim 12 merely provides a system by which the display could be randomly accessed. It is not limited to that mode of operation, but rather, fully in accordance with the limitations of claim 12, an entire subsequent data frame could be read onto the display in a non-random access mode of operation. This departure might be critically importance under the doctrine of equivalents on remand.
Nonetheless, I agree with the majority that claim 12 is not literally infringed, as the SSIH system does not store address data in the form required by the claim— multibit coded address data. While a finding of equivalence is implicit in the Commission’s decision, the Commission did not undertake the requisite analysis. Thus, the case must be remanded for consideration of whether SSIH’s hardwired mode of address data storage infringes claim 12 under the doctrine of equivalents.
B.
Claim 10 poses a potential problem of claim interpretation. The parties and the majority focus primarily on the memory limitation of claim 10, and I agree that that element is taught by the reference. The critical limitations of claim 10, however, would appear to be those relating to the sequence of processing and displaying the data.
The standard test of anticipation is whether the claim reads on the reference— an “infringement” test. The “majority rule” heretofore has been that the language of the claim defines the metes and bounds of the invention for purposes of determining its validity. A minority of courts have, however, referred to the specification to provide additional limitations to the claim in order to save the claim from invalidity. The court in the instant case appears to analyze the invention as defined exclusively by the limitations of claim 10, without reference to any additional limitations of the specification. It is clear that under such an approach, claim 10 is invalid.
Claim 10 is quite broad. The reference expressly discloses the key element of contention between the parties — the memory element. Additionally, the limitations on the manner of operation and on the sequencing and display of the data are so general and so broad as to read on the reference. If recourse is made to the specification, however, it is clear that the invention and reference do not function in substantially the same manner, belying the conclusion that they describe the same invention within the meaning of 35 U.S.C. § 102(e).
*385The court’s approach is, however, supported by a substantial body of precedent. A majority of courts have declined to go beyond the language of the claim to the specification in order to save the claim from invalidity.3 The court today follows that “majority” approach without recognition of several binding precedents of the Court of Claims, which precedents appear to compel a different result.
The Court of Claims has generally embraced the “minority” approach to claim interpretation. That court has read the claim in conjunction with the specification in order to preserve the validity of a claim.4 Such “minority” approach garners at least some degree of support from Supreme Court precedent on the construction of an ambiguous claim.5 The articulation of the “minority” rule by the Court of Claims, however, goes beyond the situation where the claim is ambiguous.
In Decca Ltd. v. United States, the Court of Claims, affirming per curiam a recommended decision by then Commissioner Lane (later a judge of the Court of Customs and Patent Appeals), clearly articulated its approach in relying on the specification to supply additional limitations not found in the claims:6
Defendant contends that claims 1, 2, and 3 of the ’980 patent are invalid under Title 35 U.S.C. § 102 or § 103. In support of its contentions, defendant relies on prior art patents and a report disclosing a navigation system known as LF Loran which was developed subsequent to the Loran-A system. * * *
We must note initially that claims 1, 2, and 3 of the ’980 patent are so broad, by themselves, as to encompass any device accomplishing the general operation they describe. In fact, the claims would read precisely on an apparatus consisting of an LF Loran, with its master and slave stations, transmitting pulse-modulated signals, coupled to the British O’Brien patent, employing a phase discriminator-phase regulator. Since these are clearly “old”, and plaintiff insists it has produced something novel, it is evident that a more detailed description is necessary to enable a reader to distinguish the ’980 from other devices which might be covered by the ’980 claims if they are read broadly and literally. [Emphasis in original.]
To prevent such invalidity of the patent for overbreadth and clear anticipation (35 U.S.C. § 112 (1964); Hailes v. Van Wormer, 20 Wall. 353, 372, 22 L.Ed. 241 (1873); see also Graver Tank & Mfg. Co. v. Linde Air Products Co., 336 U.S. 271, 276-277 [69 S.Ct. 535, 538-39, 93 L.Ed. 672 [80 USPQ 451, 453] (1949); Special Equipment Co. v. Coe, 324 U.S. 370, 385— 386 [65 S.Ct. 741, 748, 89 L.Ed. 1006] [64 USPQ 525, 532] (1945) (dissent); General *386Electric Co. v. Wabash Appliance Corp., 304 U.S. 364, 368-372 [58 S.Ct. 899, 901-903, 82 L.Ed. 1402] [37 USPQ 466,468-70] (1938)), the specifications must in this instance be read to limit the claims. Hailes v. Van Wormer, 20 Wall. 353, 372, 22 L.Ed. 241 (1873); Dominion Magnesium Ltd. v. United States, 320 F.2d 388, 394 [138 USPQ 306, 310-11] (1963). The painstaking detail of plaintiff’s description indicates that the specifications reveal, not a mere example of his invention, but rather the precise nature of the claimed discovery. Thus, plaintiff’s claim must be limited to what appears in the description. Hailes v. Van Wormer, supra, 20 Wall, at 372 [22 L.Ed. 241] * * *. * * * [Emphasis supplied.]
Again in Roberts Dairy v. United States7 the court referred to the specification to provide additional limitations to the claim and thus, preserve its validity:
In Motion Picture Patents Co. v. Universal Film Mfg. Co., 243 U.S. 502, 510, 37 S.Ct. 416, 418, 61 L.Ed. 871 (1917), the Supreme Court stated that “The scope of every patent is limited to the invention described in the claims contained in it, read in the light of the specification.” More recently, the Supreme Court reiterated that position in United States v. Adams, 383 U.S. 39, 49 [86 S.Ct. 708, 713, 15 L.Ed.2d 572] [148 USPQ 479, 482] (1966), when it stated: “it is fundamental that claims are to be construed in the light of the specifications and both are to be read with a view to ascertaining the invention.” See also, Tate Engineering, Inc. v. United States, [193 Ct.Cl. 1088] 477 F.2d 1336, 1340 [178 USPQ 365] (1973). Thus, a patentee is bound by his specification in interpreting his patent claims even when his specification requires a narrower interpretation of the claims than the patentee desires. Texsteam Corp. v. Blanchard, 352 F.2d 983, 147 USPQ 431 (5th Cir.1965), cert. denied, 387 U.S. 936 [87 S.Ct. 2064, 18 L.Ed.2d 1000] [153 USPQ 888] (1967).
Furthermore, this construction of claim 1 is required to distinguish it, as will be more fully discussed hereinafter, from the prior art and to thus avoid invalidity. Calico Scallop Corp. v. Willis Bros., Inc., 458 F.2d 390, 173 USPQ 321 (4th Cir. 1972); Tate Engineering, Inc. v. United States, supra. [Emphasis supplied.]
It is clear that there is adequate Court of Claims precedent to support reference to the specification in order to save a claim.
These two analytic approaches (majority and minority) would reach different results on the facts of the instant case. As in Decca, despite the breadth of the language of claim 10 standing alone, the specification provides adequate description of the invention to safely conclude that the reference and the invention operate in a substantially different manner and thus reflect different inventions.
The specification discloses an extremely flexible control system for a data display device. Data is stored in “frames” corresponding to the visual display frames. The system is capable of randomly accessing both the memory and the display, although neither claim 10 nor the specification is limited to that mode of operation of either display or memory. The flexibility of the control system enables data to be processed from memory into the display in the sequence that it is displayed. In contrast, the sequencing of data processing and display disclosed by Harnden is far less flexible.
Harnden’s logic transfer circuits consist exclusively of serially connected shift registers. This structure is physically incapable of the flexibility of data transfer that is the key feature of the invention embodied in the ’762 patent. The shift register logic can transfer data only sequentially from one register to the next consecutive register. Harnden does, however, disclose an anima*387tion technique involving the presentation of a data set, flushing that data through the registers, and presentation of the next data set. Harnden processes the data as follows:
The traveling message sign herein-above described may also be utilized as a changing sign, that is, a sign wherein the characters do not move thereacross but are fixed in position and can be changed. Examples of the latter type of sign are * * * and various scoreboards associated with sporting events such as baseball and horse racing. The message is encoded on the tape and goes through the same process in information circuit 24 and is thence transferred to the display sign, however, the lamp intensity control 26 is controlled in synchronism with the transfer of the message from information circuit 24 to the remote display sign such that all of the lamps on the sign are maintained in a dark condition during the interval of message transfer. Upon the complete message being obtained on the sign, decoder-encoder 41 instructs speed switch 50 in clock circuit 25 to switch to the stop position, thereby stopping the movement of characters on the display sign, and lamp intensity control 26 is simultaneously controlled to obtain the desired brilliance of lamp intensity on the sign. Thus, the optical effect as viewed by an observer is that of a sudden presentation of a complete message which may occupy the entire length of the display sign, then a short time interval of no message, followed by another presentation of a complete message which may be identical to . the first or changed therefrom in a predetermined manner. [Emphasis supplied.]
To illustrate, assume a display of five registers and data flow from left to right through consecutive registers, as shown in figure 1.
*388[[Image here]]
*389The data processing logic of the invention of the ’762 patent, on the other hand, is not so limited. The control system of the invention can produce a display of “T” followed immediately by “I” either by changing the entire array or by deleting only the horizontal arms of the “T.” The operation can be performed either with or without randomly accessing the memory as well as the display. It is not necessary to process the additional unneeded data through a series of registers, as does Harnden. The specification clearly establishes the mode of operation of the invention and that mode is significantly different from the mode of operation of Harnden. Construed in view of the specification, claim 10 is not anticipated by Harnden under 35 U.S.C. § 102(e).
In order to establish the validity of claim 10, it has been necessary to limit the literal language of the claim by reference to the specification. Thus, it would be unfair to grant Stewart-Warner the full breadth of the broad language of the claim for purposes of infringement. I would hold claim 10 valid and remand the case to the Commission for reconsideration of the issue of infringement with specific direction to consider the effect of the reverse doctrine of equivalents on the Commission’s finding of infringement.
III.
I dissent because the principles of claim interpretation set out in Decca and Roberts Dairy would produce a result different from that reached by the majority. There are persuasive policy arguments for limiting the definition of the invention to the language of the claims when considering the issue of validity. Such an approach has considerable logical power. It reduces the subjectivity of validity analysis, resulting in increased consistency and predictability. Admittedly, the determination of validity, as opposed to infringement, should not vary based on the equities of any particular case. Yet, that may be the result where equity is allowed to step into the specification and supply additional limitations to the claims. The better rule may well be to force the patentee to bear the burden of invalidity resulting from the overbreadth of a claim.
There is a significant body of precedent, however, which accommodates the more subjective “minority” approach to claim interpretation and the former Court of Claims is one of those courts that has articulated that more subjective approach. Rather than allow the issue to slip silently into the backwaters of the law, I write to ventilate the issue of claim interpretation raised by these precedents. The court does not address this issue today. Despite the problems inherent in a subjective approach, provided that the claim is given a consistent interpretation in any particular case, a fair and consistent result can be achieved. The analysis may be more subjective than under the “metes and bounds” approach; however, as the precedents of this court grow in number, the uniformity and predictability sought by the Federal Courts Improvement Act of 1982 may yet obtain because of the court’s exclusive jurisdiction over patent appeals. The “metes and bounds” rule may ensure even greater uniformity and predictability. The court’s failure to reject, or even to grapple with, the “minority” rule in this case, however, leaves two sets of rules governing claim interpretation in the body of precedent of the Federal Circuit — a situation far more damaging to predictability than the consistent application of the more subjective rule.
KASHIWA, Circuit Judge, joins in Parts I and II.A of this dissent, but not in Parts II.B and III.. Blonder-Tongue Laboratories, Inc. v. University of III Found., 402 U.S. 313, 350, 91 S.Ct. 1434, 1453, 28 L.Ed.2d 788, 169 USPQ 513, 527 (1971); Fed.R.Civ.P. 8(c).
. South Corp. v. United States, 690 F.2d 1368, 1370, 215 USPQ 657, 658 (Fed.Cir.1982).
. See, e.g., Jamesbury Corp. v. Litton Indus. Prods., Inc., 586 F.2d 917, 199 USPQ 641 (2d Cir.1978), cert. denied, 440 U.S. 961, 99 S.Ct 1503, 59 L.Ed.2d 774, 201 USPQ 960 (1979); Philips Indus., Inc. v. State Stove & Mfg. Co., 522 F.2d 1137, 186 USPQ 458 (6th Cir.1975); Wilcox Mfg. Co. v. Eastern Gas & Fuel Assocs., 400 F.2d 960, 158 USPQ 510 (4th Cir.1968), cert. denied, 393 U.S. 1051, 89 S.Ct. 691, 21 L.Ed.2d 693, 160 USPQ 832 (1969); Beatty Safway Scaffold Co. v. Up-Right, Inc., 306 F.2d 626, 134 USPQ 379 (9th Cir.1962).
. Roberts Dairy Co. v. United States, 182 USPQ 218, 223-24 (Ct.C1.1974), aff’d, 208 Ct.Cl. 830, 530 F.2d 1342, 198 USPQ 383 (Ct.C1.1976); Decca Ltd. v. United States, 190 Ct.Cl. 454, 420 F.2d 1010, 1021, 164 USPQ 348, 357 (Ct.Cl. 1970), cert. denied, 400 U.S. 865, 91 S.Ct. 102, 27 L.Ed.2d 104, 167 USPQ 321 (1970); Palmer v. United States, 191 Ct.Cl. 346, 423 F.2d 316, 320-21, 163 USPQ 250, 254 (Ct.C1.1969), aff’d, 423 F.2d 316, 165 USPQ 88 (Ct.C1.1970), cert. denied, 400 U.S. 951, 91 S.Ct. 242, 27 L.Ed.2d 258, 167 USPQ 705 (1970). See also Dominion Magnesium Ltd. v. United States, 162 Ct.Cl. 240, 320 F.2d 388, 394, 138 USPQ 306, 310 (Ct.C1.1963); Leesona Corp. v. United States, 185 USPQ 156, 164 (Ct.Cl.1975), aff'd, 208 Ct.Cl. 871, 530 F.2d 896, 192 USPQ 672 (Ct.Cl. 1976). But see Chesterfield v. United States, 141 Ct.Cl. 838, 159 F.Supp. 371, 116 USPQ 445 (Ct.Cl.1958).
. United States v. Adams, 383 U.S. 39, 49, 86 S.Ct. 708, 713, 15 L.Ed.2d 572, 148 USPQ 479, . 482 (1966) (“it is fundamental that claims are to be construed in the light of the specification and both are to be read with a view to ascertaining the invention”).
. Decca Ltd. v. United States, 420 F.2d at 1021, 164 USPQ at 357.
. Roberts Dairy Co. v. United States, 182 USPQ at 223-24, affd, 530 F.2d at 1352, 198 USPQ 383.